Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The elected invention is Group I, claims 1-4 and 16-31.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the coupling feature extending from an inner surface of the second half, as recited in claim 25 line 4 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 16-31 are finally rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The rejection follows similar reasoning to that explained in paragraph 5 of the last Office action. To summarize, each independent claim appears to indicate based on at least the claim preambles that what the claims are directed to is the sub-combination of the packaging container only. Note, for example only, that the preamble of claim 1 reads “A packaging container, comprising”, and note that the container content is not part of the container. However, some limitations in the claims are recited in such a way that structure of the packaging container depends on the contents of the packaging container. As explained before, this in turn suggests that the contents of the packaging container are actually claimed in combination with the container. As one example only, the examiner has previously expressly pointed to the claim limitation “the coupling element is sized and configured to receive a central coupling element of a packaging element thereon”, wherein at least the “sized” limitation is a structural element of the packaging container that depends on the packaging element that is ostensibly not positively claimed. Now, applicant has added limitations to each independent claim that clearly make the issue worse, not better. For example only, see the claim limitation “the second diameter is greater than or equal to a diameter of a hollow inner opening defined by the central coupling element of the packaging element receivable on the tapered peg”. So in this example, the diameter of the tapered peg (a container structural feature) is made expressly dependent on the packing element, a container content that appears to be recited only functionally, since the applicant is has not clearly recited this content in combination with the packaging container, even after receiving the last rejection on similar grounds (see also the applicant’s latest arguments indicating that the container content is only functionally claimed, while inexplicably also indicating that the packaging container is structurally limited by the container content).
In the comparison of the claims with the prior art below, the claims are treated as reciting the contents of packaging container in combination with the packaging container. This has been done to give the effect it is believed the applicant intends to the claim recitations that depend on the packaging container contents. However, amendments to the claims are required to make it clear in the usual manner that the claims are directed to the packaging container and its content.
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 16-31 are finally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,819,399. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious in view of the patent claims to construct the packaging container claimed in the subject application for the purpose of providing a more economical container.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 16-31 is/are finally rejected under 35 U.S.C. 103 as being unpatentable over Caron (2005/0173278) in view of Lachambre (5,396,991) or Ovadia (5,649,625) or Watson (2005/0133390). Caron meets most of the features of these claims including the functional recitation of material configured to be sterilized in claim 25. Additionally and referring, for example to claim 16, the claimed packaging container can be packaging and display box 100. The claimed first half can be bottom portion 110 (that includes the insert 140 therein as disclosed, for example, in [0041]) and the claimed second half can be lid portion 120. Thus, the claimed base surface of the first half can be the combined bottom wall of the insert and bottom wall 112 of bottom portion 110 (combined structure that is most clearly seen in the Fig. 5 embodiment) and the claimed outer wall extending from the base surface can be the combined walls of the insert and bottom portion 110 (again combined structure that is most clearly appreciated from the Fig. 5 embodiment). The claimed coupling element comprising a peg can be peg 141 in Fig 3. The claimed packaging element can be an osteosynthesis plate such as plates 12 or 12’, and its claimed central coupling element can be a portion of the plate having a hole therein for mounting on the coupling element.
Therefore, what Caron is missing is that the peg is tapered as claimed, including the features of the tapered peg now added into the claims. However, it would have been obvious in view of any one of the secondary references to provide the peg of Caron to have a tapered shape (to include the diameters claimed) in order to more securely hold the packaging element in the packaging container and/or in order to do so while providing a slight clearance between the packaging element and the base surface of the packaging container (making the packaging element easier to grasp) as also described in [0047] of Caron.
Regarding claim 25 the inset coupling area can be notch 174 and the coupling feature can be tongue 172 of Caron. Thus, what Caron is also missing with respect to claim 25 is that the coupling feature may not extend from an inner surface of the second half. On the other hand it is conventional to provide a coupling feature to extend from an inner surface of a container half. It would have been obvious to provide the same for the second half of the Caron container, as a design expedient or to make the container more attractive.
Caron may also not disclose some of the features of the claims dependent on claims 16 and 25. On the other hand, these features are conventional or well within the level of skill of one having ordinary skill in the relevant art to provide. Therefore, it would have been obvious to provide the apparatus of Caron with the missing features, in order to make the apparatus more economical to produce and/or in order to make the apparatus more suitable for its intended purpose.
Applicant's arguments filed 7/13/26 have been fully considered but they are not persuasive.
Regarding the rejection for indefiniteness, applicant argues that the claim amendments clarify that the claims are directed to the sub-combination. The examiner disagrees. It is apparent that the claim amendments raise the same issues that caused the rejection in the first place. Not only that but some claim limitations that caused the rejection last time also clearly remain in the claims.
Regarding the prior art rejection applicant first argues that Caron’s peg does not extend from the base surface of the first half. In response it appears the applicant did not properly appreciate the disclosure in Caron. The rejection now adds detail that indicates that the Carron bottom portion includes the combined bottom walls of the insert and bottom portion 110, and their combined outer walls. Therefore, Carons peg does extend from the base surface of the first half.
Applicant’s second argument is that Caron’s peg is not a tapered peg. In response the last rejection and the one herein treats Caron as missing the feature and treats it as being an obvious modification to the Caron peg. If one wants to hold something on a peg, it is known in the prior art to taper the peg such that the smaller diameter at the top makes mounting on the peg easier while the increasing diameter at the bottom of the peg eventually positively holds the item unto the peg. Not that a reference needs to say this, but see applied Watson for the same.
In connection with the tapered peg argument, applicant also argues that Lachambre, even cited to show a tapered peg, is non-analogous art. The examiner disagrees. If you want to mount something on a peg, as Caron does, then you look to prior art that does the same thing. You can characterize this as being in the same field of endeavor or being reasonably pertinent to the particular problem with which the inventor is involved. Either way, the point is you are trying to mount something on a peg which is exactly what the prior art is doing, and therefore, the prior art is not non-analogous. See also Watson’s explicit teaching in [0029] thereof that the Watson peg need not only be used with a data storage disk but can also be used with any object having a hole such as a ring, watch, bagel, doughnut or the like. Watson did not need to expressly teach these disparate articles for one of ordinary skill in the art to realize that one seeking to mount a particular item on a peg could look to other different items mounted on pegs.
Fourth, the applicant argues that Caron teaches the opposite of coupling above the base using the peg. Even if this is correct, this is not a “teaching away” if applicant is attempting to make this argument. More importantly, Caron also clearly teaches coupling above the base, that is retention on the peg such that the retained item is spaced from the surface from which the peg extends, such that the retained item can be more easily lifted off the peg. So see [0047] of Caron as set forth in the rejection itself.
Claims 1-4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. As indicated above the determination of allowability is based on the examiner treating the claims as if all of the packaging container contents recited therein are claimed. Therefore, the amendments necessary to overcome the 112 rejections and be allowable in response to this Office action are amendments that clearly recite the packaging container and its contents in combination in the usual manner.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/Primary Examiner, Art Unit 3736
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